Tuesday, August 23, 2016

Today's Tip for Saving Your Trademark Filing Fee - Don't File TALKING BOTTLE OPENER for a Talking Bottle Opener

On August 18th, a corporation in California filed a a federal trademark application for TALKING BOTTLE OPENER in Class 021 for "[b]ottle openers." The problem? The mark is merely descriptive of the underlying goods.

Section 2(e)(1) of the Trademark Act prohibits the registration of a merely descriptive term on the Principal Register until it can be shown the term has acquired distinctiveness in the marketplace. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. TMEP 1209.01(b). I've blogged about merely descriptive marks many times in the past (like here, here, and here).

The reasoning behind the 2(e)(1) prohibition is fairly simple - if one obtains the exclusive right to use a descriptive term, others will lose the ability to use that descriptive term to describe their goods or services. For example, how would an operator of a car wash describe his or her service if another business owned a trademark registration for the phrase "car wash?" 

Merely descriptive terms are not absolutely barred from registration, however. If a mark acquires distinctiveness, it can be registered on the Principal Register. In general, this means the mark "through usage by one producer with reference to his product, acquire[s] a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer." TMEP 1212. The burden is on the applicant to claim acquired distinctiveness and submit the corresponding evidence therewith. TMEP 1212.01. The applicant for this mark has not done either.

So is the phrase TALKING BOTTLE OPENER descriptive of a characteristic, function, or feature of a bottle opener that talks when you use it (in this case, sings the USC fight song)? I think so. And when this application is assigned to an Examining Attorney at the U.S. Patent and Trademark Office in approximately three months, I think they will agree and issue an Office Action refusing to register this mark under 2(e)(1) of the Trademark Act. Unfortunately for the applicant, this means its $225 nonrefundable filing fee is all but lost.

No comments:

Post a Comment